3D Marks. Stefan Martin Member of the Boards of Appeal February 2017

Transcription

1 3D Marks Stefan Martin Member of the Boards of Appeal February 2017

2 OUTLINE Introduction Formalities examination Substantive examination Specific cases 2

3 OUTLINE Introduction Formalities examination Substantive examination Specific cases 3

4 INTRODUCTION Definition A three-dimensional mark is a mark consisting of a three-dimensional shape (including containers, packaging and the product itself). 4

5 OUTLINE Introduction Formalities examination Substantive examination Specific cases 5

6 FORMALITIES EXAMINATION Check box 3D in the application: otherwise 2D (unless described) 6

7 FORMALITIES EXAMINATION In the case of a trade mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance (shape mark), the mark shall be represented by submitting either a graphic reproduction of the shape, including computer-generated images, or a photographic reproduction. The graphic or photographic representation may contain different views. 7

8 FORMALITIES EXAMINATION Graphic/photographic representation: up to 6 perspectives (showing same object) 8

9 FORMALITIES EXAMINATION Possibilities of adding: Colours Additional word or figurative elements Description of the mark 9

10 SUBSTANTIVE EXAMINATION Methodology in examination 1. Shapes related or unrelated to the goods and services? 2. Examine 7(1)(e) (shapes with an essentially technical function, substantial aesthetic value or resulting from the nature of the goods) 3. Examine 7(1)(b) (or other grounds) 4. Examine 7(3) (acquired distinctiveness by use) if claimed 10

11 SUBSTANTIVE EXAMINATION Article 7(1)(b) 11

12 SUBSTANTIVE EXAMINATION Article 7(1)(b) Shapes which consist of the appearance of the goods Shapes which consist of the packaging of the goods Shapes which consist of parts of the goods 12

13 SUBSTANTIVE EXAMINATION Article 7(1)(b) Shapes unrelated to the goods or services themselves Normally no distinctiveness concerns rioja Class 33 wines 13

14 SUBSTANTIVE EXAMINATION Article 7(1)(b) Shapes which consist of the appearance of the goods [7(1)(e) analysis] 1. Identify the elements of the 3D mark 2. Assessment of the distinctiveness 14

15 SUBSTANTIVE EXAMINATION Article 7(1)(b) 1. Identify the elements of the 3D mark - Other elements (words, labels, figurative elements) may render the trade mark distinctive if on its own distinctive - Perceivable in the normal use of the product - Non-distinctive elements or descriptive elements combined with a standard shape will not confer distinctiveness on that shape 15

16 SUBSTANTIVE EXAMINATION Article 7(1)(b) This would be the case if the figurative and verbal elements are to small 16

17 SUBSTANTIVE EXAMINATION Article 7(1)(b) A shape is non-distinctive if it is a basic shape or a combination of basic shapes The shape must depart significantly from the shape that is expected by the consumer, and it must depart significantly from the norm or customs of the sector It is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a huge diversity of designs 17

18 SUBSTANTIVE EXAMINATION Article 7(1)(b) Functional shapes or features of a three-dimensional mark will be perceived by the consumer as such. For example, for washing tablets, bevelled edges avoid damage to laundry, and layers of different colours represent the presence of different active ingredients. 18

19 SUBSTANTIVE EXAMINATION Article 7(1)(b) Refused T-66/13 Echte Kroatzbeere Real Blackberry Refused T-209/13 Olive line Refused T-323/11 twelve-angel stones 19

20 SUBSTANTIVE EXAMINATION Article 7(1)(b) Accepted CTM Accepted R1354/

21 SUBSTANTIVE EXAMINATION Article 7(1)(b) 2. Assessment of the distinctiveness - No stricter criteria than for other type of marks apply: the trade mark must be able to perform its essential function - Basic shapes or combination of basic shapes are non distinctive - Prima facie distinctive only if it significantly departs from the customs in the commenrcial sector concerned - Public perception not necessarily the same in relation to a word or figurative mark than in relation to a 3D mark 21

22 SUBSTANTIVE EXAMINATION Article 7(1)(b) Refused T-440/13 chocolate Refused T-331/12 Shape of an electronic screen Refused T-171/12 shape of turnbuckle Refused T-30/00 Washing machine tablet 22

23 SUBSTANTIVE EXAMINATION Article 7(1)(b) Accepted CTM Ice creams Accepted CTM Cl. 7, 11, 16, 35, 38, 42 Pumps, compressors Accepted T-450/09 3D puzzle (appeal pending) 23

24 SUBSTANTIVE EXAMINATION Article 7(1)(b) Accepted CTM Cl. 8 protective covers for mobile phones Accepted R2072/ (inhaler) 24

25 SUBSTANTIVE EXAMINATION Article 7(1)(b) Shapes which consist of the packaging of the goods Same assessment as shapes of goods themselves Shape must be materially different from a combination of basic or common elements Search for shapes on the market Choosing a sufficiently broad category of the goods concerned (i.e. in order to assess the distinctiveness of a milk container, a search must be carried out in relation to containers for beverages in general 25

26 SUBSTANTIVE EXAMINATION Article 7(1)(b) Refused T-402/02 sweets Refused C-98/11P chocolates Refused T-347/10 beverages 26

27 SUBSTANTIVE EXAMINATION Article 7(1)(b) Accepted CTM perfumes Accepted CTM Perfumes, clothing, alcoholic beverages 27

28 SUBSTANTIVE EXAMINATION Article 7(1)(b) Accepted CTM Clases 29 and 30 including milk and milk products 28

29 SUBSTANTIVE EXAMINATION Article 7(1)(b) Shapes which consist of parts of the goods Same assessment as shapes of goods themselves Non-distinctive if a direct link can be established between the shape and the goods to which it belongs Public will perceive it as a detail of the product rather than indication of commercial origin 29

30 SUBSTANTIVE EXAMINATION Article 7(1)(b) Refused only for goods which are equipped with locking devices C-97/12P CLASP LOCK 30

31 Further cases for discussions Classes 9, 25, 28 31

32 Further cases for discussions Class 30 32

33 Further cases for discussions Classes 16, 20, 21 33

34 Further cases for discussions EUTM applied for Cars, toy cars 34

35 Further Cases for discussions 35

36 Class 32 36

37 Further Cases for discussions T-411/14 37

38 Thank you for your attention 38

39 39